DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
The amendment filed 10/27/2025 has been entered. Claims 1-5, 8-12, and 15-20 remain pending. Claims 6-7 and 13-14 are cancelled. Claims 1 and 8, and the abstract are amended.
Response to Arguments
Applicant’s arguments, see page 28, filed 10/27/2025, with respect to the Abstract have been fully considered and are persuasive. The objection of the Abstract has been withdrawn.
The abstract has been amended to fewer than 150 words.
Applicant’s arguments, see page 29, filed 10/27/2025, with respect to claims 1 and 4 have been fully considered and are persuasive. The rejection of claims 1 and 4 has been withdrawn.
Applicant has filed a terminal disclaimer for co-pending application number 18/171,369.
Applicant’s arguments, see page 29-30, filed 10/27/2025, with respect to the rejection(s) of claim(s) claims 1, 4-5, 15, and 18-19 under nonstatutory double patenting have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of application 19/200,690 in view of Nagao (US 20090232551).
Applicant cites MPEP 804, noting the Instant Application has an earlier US filing date than the copending application 19/200,690. Examiner agrees the reference application has a later filing date. However, the double patenting rejections are not the only remaining rejection on the application. Also, following amendment Nagao is relied on to teach the specific polycarbonate resin of the amended claim 1.
Applicant’s arguments, see page 30-31, filed 10/27/2025, with respect to the rejection(s) of claim(s) 1-20 under 35 USC 102 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Mizushima (JP 2008203802) in view of Nagao (US 20090232551).
Nagao is now relied upon to teach specific polycarbonates having constitutional units meeting the claimed formula (C) and (Cb1)-(Cb8) from the amended claims.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 4-5, 15, and 18-19 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, and 11 of copending Application No. 19/200,690 in view of Ngao (US 20090232551).
Regarding claims 1 and 4-5, the ‘690 application claims An electrophotographic photoreceptor comprising:
a conductive substrate; and
a photosensitive layer disposed on the conductive substrate, wherein an outermost surface layer contains a charge transport material, a polyarylate resin having at least one dicarboxylic acid unit selected from the group consisting of a dicarboxylic acid unit (A2) represented by Formula (A2), a dicarboxylic acid unit (A3) represented by Formula (A3), a dicarboxylic acid unit (A4) represented by Formula (A4), and a dicarboxylic acid unit (A5) represented by Formula (A5) and a diol unit represented by Formula (B), and a polycarbonate resin, and
a weight-average molecular weight MwA of the polyarylate resin and a weight-average molecular weight MwB of the polycarbonate resin satisfy -14 ≤ 100 x (MwA - MwB)/MwA ≤ 14,
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in Formula (A2), n201 and n202 are each independently an integer of 0 or greater and 4 or less, and n201 pieces of Ra201's and n202 pieces of Ra202's are each independently an alkyl group having 1 or more and 10 or less carbon atoms, an aryl group having 6 or more and 12 or less carbon atoms, or an alkoxy group having 1 or more and 6 or less carbon atoms,
in Formula (A3), n301 and n302 are each independently an integer of 0 or greater and 4 or less, and n301 pieces of Ra301's and n302 pieces of Ra302's are each independently an alkyl group having 1 or more and 10 or less carbon atoms, an aryl group having 6 or more and 12 or less carbon atoms, or an alkoxy group having 1 or more and 6 or less carbon atoms,
in Formula (A4), n401 is an integer of 0 or greater and 6 or less, and n401 pieces of Ra401's are each independently an alkyl group having 1 or more and 10 or less carbon atoms, an aryl group having 6 or more and 12 or less carbon atoms, or an alkoxy group having 1 or more and 6 or less carbon atoms,
in Formula (A5), n501, N502, and n503 are each independently an integer of 0 or greater and 4 or less, and n501 pieces of Ra501's, n502 pieces of Ra502's, and n503 pieces of Ra503's are each independently an alkyl group having 1 or more and 10 or less carbon atoms, an aryl group having 6 or more and 12 or less carbon atoms, or an alkoxy group having 1 or more and 6 or less carbon atoms,
in Formula (B), ArB1 and ArB2 are each independently an aromatic ring which may have a substituent, LB is a single bond, an oxygen atom, a sulfur atom, or -C(Rb1)(Rb2)-, and nB1 is 0,1, or 2, where Rb1 and Rb2 are each independently a hydrogen atom, an alkyl group having 1 or more and 20 or less carbon atoms, an aryl group having 6 or more and 12 or less carbon atoms, or an aralkyl group having 7 or more and 20 or less carbon atoms, and Rb1 and Rb2 may be bonded to each other to form a cyclic alkyl group. (Claim 1)
The electrophotographic photoreceptor according to claim 1,
wherein the diol unit represented by Formula (B) includes at least one selected from the group consisting of a diol unit (B1) represented by Formula (B1), a diol unit (B2) represented by Formula (B2), a diol unit (B3) represented by Formula (B3), a diol unit (B4) represented by Formula (B4), a diol unit (B5) represented by Formula (B5), a diol unit (B6) represented by Formula (B6), a diol unit (B7) represented by Formula (B7), and a diol unit (B8)
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in Formula (B1), Rb101 is a branched alkyl group having 4 or more and 20 or less carbon atoms, Rb201 is a hydrogen atom or an alkyl group having 1 or more and 3 or less carbon atoms, and Rb401, Rb501, Rb801, and Rb901 are each independently a hydrogen atom, an alkyl group having I or more and 4 or less carbon atoms, an alkoxy group having I or more and 6 or less carbon atoms, or a halogen atom,
in Formula (B2), Rb102 is a linear alkyl group having 4 or more and 20 or less carbon atoms, Rb202 is a hydrogen atom or an alkyl group having 1 or more and 3 or less carbon atoms, and Rb402, Rb502, Rb802, and Rb902 are each independently a hydrogen atom, an alkyl group having 1 or more and 4 or less carbon atoms, an alkoxy group having 1 or more and 6 or less carbon atoms, or a halogen atom,
in Formula (B3), Rb113 and Rb213 are each independently a hydrogen atom, a linear alkyl group having 1or more and 3 or less carbon atoms, an alkoxy group having 1 or more and 4 or less carbon atoms, or a halogen atom, d is an integer of 7 or greater and 15 or less, and Rb403, Rb505, Rb803 and Rb903 are each independently a hydrogen atom, an alkyl group having 1 or more and 4 or less carbon atoms, an alkoxy group having 1 or more and 6 or less carbon atoms, or a halogen atom,
in Formula (B4), Rb104 and Rb204 are each independently a hydrogen atom or an alkyl group having 1 or more and 3 or less carbon atoms, and Rb404, Rb504, Rb804, and Rb904 are each independently a hydrogen atom, an alkyl group having 1 or more and 4 or less carbon atoms, an alkoxy group having 1 or more and 6 or less carbon atoms, or a halogen atom,
in Formula (B5), Ar105 is an aryl group having 6 or more and 12 or less carbon atoms or an aralkyl group having 7 or more and 20 or less carbon atoms, Rb205 is a hydrogen atom or an alkyl group having lor more and 3 or less carbon atoms, and Rb405, Rb505, Rb805, and Rb905 are each independently a hydrogen atom, an alkyl group having 1or more and 4 or less carbon atoms, an alkoxy group having 1or more and 6 or less carbon atoms, or a halogen atom,
in Formula (B6), Rb116 and Rb216 are each independently a hydrogen atom, a linear alkyl group having 1 or more and 3 or less carbon atoms, an alkoxy group having 1 or more and 4 or less carbon atoms, or a halogen atom, e is an integer of 4 or greater and 6 or less, and Rb406, Rb506, Rb806, and Rb906 are each independently a hydrogen atom, an alkyl group having 1 or more and 4 or less carbon atoms, an alkoxy group having 1 or more and 6 or less carbon atoms, or a halogen atom,
in Formula (B7), Rb407, Rb507, Rb807, and Rb907 are each independently a hydrogen atom, an alkyl group having 1 or more and 4 or less carbon atoms, an alkoxy group having 1 or more and 6 or less carbon atoms, or a halogen atom,
in Formula (B8), Rb408, Rb508, Rb808, and Rb908 are each independently a hydrogen atom, an alkyl group having 1 or more and 4 or less carbon atoms, an alkoxy group having 1 or more and 6 or less carbon atoms, or a halogen atom. (Claim 4)
However, the ‘690 application does not claim a polycarbonate resin meeting formula (C), or (Cb1)-(Cb8).
Nagao teaches a photoreceptor having excellent abrasion resistance, using a combination of a polyester resin and another resin, preferably a polycarbonate ([0012]-[0014], [0021]). Nagao further teaches the polycarbonate resin uses a structural unit derived from a bifunctional phenol selected from a list including several which meet the limitations of Formula (C) in claim 1, with 2,2-bis-(4-hydroxyphenyl)propane, 1,1-bis-(-4-hydroxyphenyl)cyclopentane, 1,1-bis-(-4-hydroxyphenyl)cyclohexane, 2,2-bis-(-4-hydroxy-3-methylphenyl)propane, and 1,1-bis-(-4-hydroxyphenyl)phenylethane as the preferred choices ([0332]-[0334]). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to use polycarbonate in the photoreceptor of the ‘690 application, using a bis(hydroxyphenyl) based structural unit, as taught by Nagao, to improve abrasion resistance.
Regarding claims 15 and 18-19, the ‘690 application further claims a process cartridge comprising:
The electrophotographic photoreceptor according to claim 4,
Wherein the process cartridge is attachable to and detachable from an image forming apparatus. (Claim 11)
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-5, 8-12, and 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over Mizushima (JP 2008203802) in view of Nagao (US 20090232551).
Regarding claims 1-5 and 8-12, Mizushima discloses an electrophotographic photoreceptor having a photosensitive layer on a conductive support which contains a polyester resin (first resin) and a polycarbonate (second resin), and the second resin is 1-70% by weight with respect to the first resin ([0009]). Therefore, the polyester (first resin) is 100/170 to 100/101 or 59 to 99 % by weight of the total resin. Mizushima further discloses the polyester resin (first resin) comprises a repeat unit represented by formula (1), made up of a diol and a dicarboxylic acid, each comprising 2 arylene groups ([0009]-[0011]).
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Mizushima further discloses resin X, comprising a diol segment, which meets the claimed Formula (B10) of the instant application, as well as Formula (A3) of the instant application ([0138]-[0139]).
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Mizushima further discloses the photosensitive layer may be composed of a single layer or 2 or more layers ([0022]), with the charge transport material in the single photosensitive layer or the charge transporting layer ([0082]).
Nagao teaches a photoreceptor having excellent abrasion resistance, using a combination of a polyester resin and another resin, preferably a polycarbonate ([0012]-[0014], [0021]). Nagao further teaches the polycarbonate resin uses a structural unit derived from a bifunctional phenol selected from a list including several which meet the limitations of Formula (C) in claim 1, with 2,2-bis-(4-hydroxyphenyl)propane, 1,1-bis-(-4-hydroxyphenyl)cyclopentane, 1,1-bis-(-4-hydroxyphenyl)cyclohexane, 2,2-bis-(-4-hydroxy-3-methylphenyl)propane, and 1,1-bis-(-4-hydroxyphenyl)phenylethane as the preferred choices ([0332]-[0334]). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to use polycarbonate in the photoreceptor of the Mizushima, using a bis(hydroxyphenyl) based structural unit, as taught by Nagao, to improve abrasion resistance.
Regarding claims 15-19, Mizushima discloses all limitations as set forth above. Mizushima further discloses the electrophotographic photosensitive member may be used in an electrophotographic cartridge ([0008], [0016]). Mizushima further discloses the electrophotographic cartridge is removable from the image forming apparatus ([0119]).
Regarding claims 20, Mizushima discloses all limitations as set forth above. Mizushima further discloses an image forming apparatus using the electrophotographic photosensitive member ([0008], [0015]). The Image forming apparatus comprises a charging means for charging the photosensitive member, an image exposure means for exposing the charged photosensitive member to form an electrostatic latent image, a developing means to develop the latent image with toner, a transfer means for transferring the toner to a transfer medium ([0015], [0118]). The transfer device transfers the toner image onto the recording paper ([0126]).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHARLES COLLINS SULLIVAN IV whose telephone number is (571)272-2208. The examiner can normally be reached M-F 8-4:30.
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/C.C.S./ Examiner, Art Unit 1737
/MARK F. HUFF/ Supervisory Patent Examiner, Art Unit 1737